WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lakes Gas Co. v. Domain Administrator, DomainMarket.com

Case No. D2019-0830

1. The Parties

Complainant is Lakes Gas Co., United States of America (“United States”), represented by Fredrikson & Byron, P.A., United States.

Respondent is Domain Administrator, DomainMarket.com, United States, represented by Brian H. Leventhal, United States.

2. The Domain Name and Registrar

The disputed domain name <lakesgas.com> is registered with eNom, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 11, 2019. On April 12, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 15, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on April 23, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on April 26, 2019.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 29, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 19, 2019. Upon request of Respondent, the due date for Response was automatically extended to May 23, 2019, in accordance with the Rules, paragraph 5(b). The Response was filed with the Center on May 24, 2019.

On May 30, 2019, the Center received a supplemental filing filed by Complainant. On June 14, 2019, the Center received a supplemental filing from Respondent.

The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on June 6, 2019. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant Lakes Gas Co., (“Lakes Gas” or “Complainant”) operates a propane company in the United States under the name Lakes Gas. Complainant is one of the top 15 largest propane companies in the United States, operates more than 40 branches, and serves over 70,000 customers through over 60 million gallons of propane sold annually. Complainant’s business largely serves individuals, farms, factories, and construction sites. Complainant spends roughly USD 500,000 per year on advertising in the United States and in Canada.

Respondent DomainMarket.com, (“Respondent”) operates a business of buying and selling domain names on the secondary marketplace through its website “www.domainmarket.com”. Respondent registered the disputed domain name, <lakesgas.com>, on January 8, 2011. At the time of Complainant’s filing, the disputed domain name resolved to a parked page.

5. Parties’ Contentions

A. Complainant

Complainant contends the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. Complainant asserts that its trademark and tradename LAKES GAS has been used for almost sixty years, being first used in 1959, long before the January 8, 2011 registration of the disputed domain name by Respondent. Complainant further asserts that the addition of the top-level domain name is not a defense to a finding of confusing similarity between the disputed domain name and the Complainant’s LAKES GAS trademark.

Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name. Complainant asserts Respondent does not have any applications or registrations for LAKES GAS nor is it commonly known by the name “Lakes Gas.” Complainant further asserts Respondent does not use and is not preparing to use the disputed domain name in connection with a bona fide offering of goods or services, or making legitimate noncommercial or fair use of the domain name. Complainant contends the disputed domain name promotes or suggests a connection or relationship between Respondent and Complainant. Complainant asserts the unauthorized use of Complainant’s mark in the disputed domain name undermines a claim of bona fide use under the Policy. Complainant asserts that Respondent chose to register the disputed domain name because of its significance vis-à-vis Complainant’s LAKES GAS trademark and Complainant’s associated goodwill and reputation.

Complainant asserts that the disputed domain name was registered and is being used in bad faith. Complainant contends Respondent registered the disputed domain name for the purposes of selling or transferring the disputed domain name to Complainant, preventing Complainant from reflecting the name in the domain name, disrupting Complainant’s business, or attracting Internet users to the domain for commercial gain by creating a likelihood of confusion with Complainant’s trademark. Complainant asserts Respondent intentionally selected the disputed domain name, thereby preventing Complainant from registering the disputed domain name, diverting traffic, and disrupting Complainant’s business. Complainant asserts it formerly owned the disputed domain name but inadvertently allowed the registration to lapse, after which time Respondent was able to register the disputed domain name.

Accordingly, Complainant has requested that the disputed domain name be transferred.

B. Respondent

Respondent asserts Complainant has failed to meet its burden of proof as set out in paragraph 4(a) of the Policy.

Respondent contends a legitimate interest in the disputed domain name. Respondent asserts it is in the business of buying and selling domain names with descriptive, geographic and generic terms, common phrases, and combinations thereof. Respondent asserts that it facilitates the sale of domain names on the secondary marketplace through Respondent’s website located at “www.domainmarket.com”. Respondent asserts the disputed domain name resolves to a landing page with the sale price, means to purchase the domain name, and a phone number to contact Respondent. Respondent asserts the disputed domain name has never been used to sell goods or services that are competitive with Complainant’s goods or services. Respondent asserts the business of reselling premium domain names is a bona fide offering of goods or services and an acceptable practice in the domain name industry. Respondent asserts the disputed domain name features a landing page that makes it clear to visitors that the disputed domain name is an item of inventory offered for sale. Respondent asserts the branding featured on the disputed domain name makes it clear there is no association with Complainant. Respondent further asserts Complainant’s mark is not unique but consists of a common geographic term paired with a generic term descriptive in Complainant’s business. Respondent further asserts there is no evidence supporting Complainant’s assertion of Respondent’s motivation for owning the disputed domain name. Respondent asserts Complainant contacted Respondent to inquire about purchasing the disputed domain name. Respondent asserts Complainant filed a trademark application for the LAKES GAS mark only after the disputed domain name was registered by Respondent. Respondent asserts the disputed domain name was registered in good faith in the ordinary course of its domain name reseller business.

Respondent asserts that the disputed domain name was not registered in bad faith nor has the disputed domain name ever been used in bad faith. Respondent asserts the disputed domain name was registered before Respondent became aware of Complainant’s rights in the LAKES GAS mark. Respondent asserts the disputed domain name was registered as part of the business model of creating or buying and selling domain names. Respondent asserts Complainant has not provided any evidence to support Complainant’s claim of bad faith. Respondent further asserts the disputed domain name was freely acquired eight years ago, while Complainant has sat on its rights. Respondent asserts Complainant cannot now complain of any harms suffered without offering any evidence thereof. Respondent further asserts Complainant does not offer any evidence that the mark was generally famous to the ordinary person. Respondent further asserts the offered price for the disputed domain name cannot be used to establish bad faith, and that Complainant’s disappointment with the purchase price is not an acceptable ground for abusing this process and taking the disputed domain name from Respondent.

Accordingly, Respondent has requested a denial of Complainant’s request and further requests a finding of reverse domain name hijacking.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name was registered and is being used in bad faith.

The Panel takes notice that Respondent filed its Response a day after the clearly established due date. It is within the panel’s sole discretion to consider an untimely response, and the Panel has duly considered the Response despite its delayed filing. Similarly, the Panel notes that it is within its discretion to request and consider additional written submissions by Complainant and Respondent, and the Panel has duly considered additional submissions by the Parties.

A. Identical or Confusingly Similar

Under paragraph 4(c), a complainant may establish that the disputed domain name is identical or confusingly similar to a trademark or service mark in which a complainant has rights by asserting unregistered or common law trademark rights, pursuant to paragraph 4(a)(i) of the Policy. See United Artists Theatre Circuit, Inc. v. Domains for Sale Inc., WIPO Case No. D2002-0005; The Professional Golfers’ Association of America v. Golf Fitness Inc., a/k/a Golf Fitness Association, WIPO Case No. D2001-0218. To establish unregistered or common law trademark rights, for the purposes of a UDRP complaint, the complainant must show that its mark has become a distinctive identifier that customers associate with the complainant’s goods and/or services. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.3. Supporting evidence demonstrating such acquired distinctiveness, or secondary meaning, must be included with the complaint, and includes multiple factors such as: duration and nature of use; amount of sales; nature and extent of advertising; degree of actual public recognition; and consumer surveys. See, e.g., K-Tek Computers, Inc., d/b/a Computer Refurb v. Domains By Proxy, LLC / mail:and Fred Sherhal, WIPO Case No. D2015-0225.

Respondent concedes the disputed domain name is identical to the mark in which Complainant alleges common law trademark rights. However, Respondent argues Complainant does not have a registered trademark, does not have protectable rights, and therefore does not have rights in the mark LAKES GAS. Respondent’s argument is misplaced. Complainant does not rely on or cite to any registered trademark rights. Rather, Complainant relies on unregistered common law trademark rights in LAKES GAS. The Panel accepts Complainant has established common law rights in the unregistered trademark LAKES GAS for the purposes of this Complaint and of the Policy. Complainant has used the name prominently in connection with Complainant’s goods and services, which are distributed throughout the United States, and has provided sufficient evidence documenting the extensive advertising, sales, and wide customer base since first using the LAKES GAS mark in 1959 – long before Respondent registered the disputed domain name.

The Panel therefore finds the disputed domain name is identical to Complainant’s protectable common law trademark LAKES GAS (ignoring the generic Top-Level Domain, in this case, “com”). Accordingly, Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its right in the trademark LAKES GAS, and showing that the disputed domain name is identical or confusingly similar to this mark.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, Complainant must make at least a prima facie showing that Respondent possesses no rights or legitimate interests in the disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once Complainant makes such a prima facie showing, the burden of production shifts to Respondent, though the burden of proof always remains on Complainant.

Paragraph 4(c) of the Policy further provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:

(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or

(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name. See WIPO Overview 3.0, sections 2.1, 2.2, 2.3, 2.4, and 2.5.

From the record in this case, there is no evidence that Respondent has any rights or legitimate interests in the disputed domain name. There is no evidence that Respondent is affiliated with, authorized, licensed to, or otherwise permitted to use the LAKES GAS mark. Furthermore, Respondent is not commonly known by “Lakes Gas” nor is it making a bona fide offering of goods or services or a legitimate noncommercial fair use. See, e.g., Playboy Enterprises International, Inc. v. Tom Baert, WIPO Case No. D2007-0968.

The Panel agrees with Respondent that Complainant lacks a registered trademark in LAKES GAS, and Respondent registered the disputed domain name before any application to register this trademark in the United States. However, as discussed above, Complainant established common law rights in the LAKES GAS mark well before Respondent registered the disputed domain name. Respondent knew or should have known, even based on “the most rudimentary Internet search,” about Complainant’s business and its protectable common law rights in its LAKES GAS mark. See Arne Jacobsen Design I/S v. Domain Administrator, DomainMarket.com, WIPO Case No. D2017-0552. Further, the website located at the disputed domain name identifies Complainant’s business on the bottom of the webpage as a potentially associated business, furthering establishing the connection between Complainant and their rights in LAKES GAS. The Panel finds Complainant established a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name, shifting the burden to Respondent to produce evidence of such rights or interests.

As noted in prior UDRP cases, the Panel here recognizes that the business of buying and selling domain names containing descriptive terms is not per se illegitimate under the Policy. The Panel also recognizes that, for the purposes of the Policy, a person conducting such a business can have rights or legitimate interests in the domain names being bought and sold in the conduct of that business. It does not follow, however, that a person conducting such a business will have rights or legitimate interests in every domain name it buys and sells. A close consideration of the relevant facts – including, in particular, the nature of Complainant’s trademark, the characteristics of the disputed domain name, and the details of Respondent’s use of the disputed domain name – is required in each case. See, e.g., Supermac’s (Holdings) Limited v. Domain Administrator, DomainMarket.com, WIPO Case No. D2018-0540.

Here, the disputed domain name is composed of the terms “lakes” and “gas,” which the Panel does not disagree are both generic words. But this specific combination of words together has no real descriptive or generic meaning, and really only has meaning in the context of Complainant’s trademark. However, even if the entirety of the disputed domain name was descriptive words and had an independent generic meaning, it does not follow automatically that Respondent thereby has rights or legitimate interests in it. See Supermac’s, WIPO Case No. D2018-0540; WIPO Overview 3.0, section 2.10.1 (“Panels have recognized that merely registering a domain name comprised of a dictionary word or phrase does not by itself automatically confer rights or legitimate interests on the respondent; panels have held that mere arguments that a domain name corresponds to a dictionary term/phrase will not necessarily suffice. In order to find rights or legitimate interests in a domain name based on its dictionary meaning, the domain name should be genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning and not to trade off third-party trademark rights.”). Respondent’s use of the disputed domain name is simply to offer it for sale, at a high price. Respondent is not using the disputed domain name in any way that relates to any of the descriptive meanings that the Respondent asserts that the disputed domain name has.

Instead, the Respondent’s use of the disputed domain name is seeking to trade off Complainant’s trademark rights. Not only is Respondent likely intending that Complainant will seek to acquire the disputed domain name, given that it exactly matches its LAKES GAS trademark and that Complainant was the previous registrant of the disputed domain name (before failing to renew the registration through error), but would also be willing to sell the disputed domain name to any person willing to pay the price. The Panel does not consider that the purpose of buying for re-sale a domain name that is identical or nearly identical to a trademark in which a third party has rights, is a purpose that, of itself, gives rise to rights or legitimate interests in the domain name, even if the domain name is partially or wholly descriptive. See Supermac’s, WIPO Case No. D2018-0540. Absent some genuine use, or intended use, of the disputed domain name in a way that relates to the asserted descriptive meaning, merely offering such a domain name for sale does not give rise to rights or legitimate interests in it.

For these reasons – namely, that the disputed domain name is not purely generic or descriptive, Respondent is not using the disputed domain name in a way that relates to the asserted descriptive meaning of the disputed domain name, the disputed domain name is identical to a trademark in which Complainant has rights, and that Respondent is seeking to trade off third-party trademark rights – the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.

Based on the evidence before the Panel, it appears more likely than not that Respondent chose this domain name not merely because of the “common geographic term paired with a generic term that is completely descriptive of Complainant’s business” but because of the secondary meaning of the exact combination of the words together in relation to Complainant. The Panel finds Complainant has met its burden of establishing that Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Panel finds that Respondent registered and used the disputed domain name in bad faith.

Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

In this proceeding, the record reflects reasonably wide recognition of the LAKES GAS mark in the United States long before the registration of the disputed domain name by Respondent. Furthermore, Complainant owned the disputed domain name prior to Respondent’s purchase of the disputed domain name. Therefore, Respondent was likely aware of the LAKES GAS mark when it registered the disputed domain name, or knew or should have known that the disputed domain name was identical or confusingly similar to Complainant’s mark. See WIPO Overview 3.0, section 3.2.1; see also The Fragrance Foundation Inc. v. Texas International Property Associates, WIPO Case No. D2008-0982 (“In the context of the worldwide web, the suggestion of Respondent – a sophisticated domainer registering thousands of domain names, with able legal counsel and an unusually vast experience in UDRP proceedings – that Respondent was not aware of Complainant’s … trademark … is, in the view of this Panel, disingenuous at best.”); Terroni Inc. v. Gioacchino Zerbo, WIPO Case No. D2008-0666 (“It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights.”).

Respondent’s use of the disputed domain name is to offer it for sale at an exorbitantly high price of USD 94,888. This Panel takes notice that the estimated fair market value for this disputed domain name ranges from about USD 650 to about 2,300. This supports an inference of bad faith under paragraph 4(b)(i) and/or 4(b)(iv) of the Policy. Furthermore, somewhat mendaciously, the list price was removed from the web page at the time of this Panel’s determination. Changing the content featured on the website located at a disputed domain name is further indication of bad faith under the Policy. See WIPO Overview 3.0, section 3.2.1 (“Particular circumstances panels may take into account in assessing whether the respondent’s registration of a domain name is in bad faith include: ... the content of any website to which the domain name directs, including any changes in such content and the timing thereof ...”).

Based on these factors, the Panel finds that the totality of the circumstances warrant a determination that the disputed domain name was registered and used in bad faith.

Accordingly, the Panel finds that Respondent registered and used the disputed domain name in bad faith and Complainant succeeds under the third element of paragraph 4(b) of the Policy.

D. Reverse Domain Name Hijacking

Respondent has alleged Reverse Domain Name Hijacking (“RDNH”) in this case. Paragraph 15(e) of the UDRP Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. RDNH is furthermore defined under the UDRP Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name.” See WIPO Overview 3.0, section 4.16.

This Panel declines to find Complainant engaged in RDNH given that Complainant has prevailed in its Complaint.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <lakesgas.com> be transferred to the Complainant.

Brian J. Winterfeldt
Sole Panelist
Date: June 21, 2019